You might have heard about logos and brand names being trademarked, but what about colours? Colours can create all kinds of brand associations, but would you believe that it took a pair of Yves Saint Laurent shoes to shake things up for the Louboutin brand before people really understood how commercially significant a colour can be in the fashion industry?
First off, why is trademarking a colour even important?
A lot of the time we unconsciously associate brands with a particular colour – take for instance the easy association between the colour red and the Coca Cola brand. Registering a colour mark (that is a trademark in a colour) cashes in on this kind of association and offers another layer of protection to your business and its brand value. It’s just another strategy to protect your business and to prevent other businesses or artists from piggy backing on your reputation and success.
In addition to trademarking brand names and logos, a lot of businesses also invest in registering colour marks. However, acknowledging colour as a trademark in the fashion industry is a lot trickier than it seems.
Ok, so back to shoes, what exactly was all the drama about?
For those of you who don’t know, Christian Louboutin is a French shoe designer famous for gorgeous, expensive stilettos and high heels, all marked with his distinctive signature element – a red sole. In 2011, Louboutin had filed a claim of trademark infringement against another very famous French fashion house; Yves Saint Laurent (YSL) because the latter had also introduced stilettos and shoes with a red sole in their 2011 Resort collection.
Louboutin claimed that the red sole was an exclusive mark of his shoes, stating that consumers associated the red soles with his brand. The company approached the court to stop YSL from selling the Resort Collection shoes and even claimed damages of at least one million dollars. The District Court initially ruled that Louboutin’s claim would not succeed, as colours were not technically eligible for trademark. Dissatisfied, Louboutin appealed the decision and in 2012, the Court of Appeals ruled that Louboutin could claim red soles as a trademark, but only conditionally – Louboutin could only claim exclusive ownership of using red soles on his shoes, so long as the body of the shoe was in a different colour. In other words, monochromatic shoes would not be infringing on Louboutin’s trademark. The YSL stilettos of the 2011 Resort Collection were monochromatic in that both the body and the sole of the shoe was red, and so the Court stated that YSL had not infringed Louboutin’s trademark.
So why so much hesitation to recognize colour marks in fashion?
In the world of fashion, colour has both an aesthetic and ornamental value to it and because it’s something integral to the value of the product, the law doesn’t encourage restricting the usage of a colour to a single designer or brand alone, unless there’s sufficient proof that the colour is almost always exclusively associated with a brand. For instance, imagine if you’re a designer coming out with a line of chiffon pleated skirts in peacock blue, but you find out that a bigger fashion house already owns the trademark on peacock blue maxi skirts – this sort of arrangement implies that only the big fashion house is authorized to produce peacock blue skirts, thereby limiting creativity and diversity in the fashion industry. This is why Courts are super wary of trademarking colour.
Alright so what do I need to know to get my colour mark registered?
First, you need to make sure that your colour mark is defined in the most explicit and clear way possible. This can be done using a colour matching system like the Pantone Matching System. Way back in 2007, Louboutin filed to register the red soles as a trademark with the US trademark office and was granted a trademark for the colour now defined as Pantone 18-1663 TPX. Unfortunately though, Louboutin’s application did not contain these colour specifics, due to which the trademark was awarded to a broad and undetermined red sole trademark – not cool, since this contributed towards weakening Louboutin’s claim.
Second, you need to create a secondary meaning with the colour you want to trademark – secondary meaning refers to an immediate and distinct association a consumer will make between the colour in question, and the brand itself. For example many of us in India are quick to make the connection between a shade of purple and chocolates from the brand Cadbury. When asked about chocolates in a purple wrapper, most of us immediately connect it to the ever-popular Dairy Milk – this is an instance of creating a secondary meaning. The trick to creating secondary meaning is to ensure a constant association between the colour and the brand, in all forms of advertising, display and marketing of the brand.
Third, the colour you choose to trademark must not serve some kind of functional purpose – it has to have been used by your brand or product for purely aesthetic and ornamental reasons.
Ok, as a designer what should I keep in mind about colour marks?
Getting a colour mark registered is a little tricky, especially if your colour mark has to do with a line of clothing or accessories. However, the Louboutin case tells us that it is possible to get a colour mark, so long as you’ve clearly defined the colour in your trademark application, established some kind of secondary meaning and you used the colour because it looked pretty and not because it was useful. As a designer, it’s best to make sure you advertise your brand or product with the colour you want to trademark so that consumers can make a clear association between the two, thereby strengthening your claim to a colour mark. Remember, investing in a colour mark may actually be super helpful in building your brand image and protecting your business.
Colour marks are super fascinating and the Louboutin shoe case is actually a really interesting way to learn more about them, but if you are a designer who still has queries about colour marks then do go ahead and leave a comment or get in touch with me via the contact details mentioned on this site.